Case No.: 11-CV-01846-LHKORDER DENYING MOTION FOR PERMANENT INJUNCTION
U n i t e d S t a t e s D i s t r i c t C o u r t
F o r t h e N o r t h e r n D i s t r i c t o f C a l i f o r n i a
Federal Circuit has recently made clear, however, there is no longer any presumption of irreparableharm, even if a patentee is able to prove that a patent is valid and infringed.
Robert Bosch LLC v.Pylon Manufacturing Corp.
, 659 F.3d 1142, 1149 (Fed. Cir. 2011). While the presumption of irreparable harm no longer applies, the Federal Circuit noted that “it does not follow that courtsshould entirely ignore the fundamental nature of patents as property rights granting the owner theright to exclude.”
. Thus, the patentee’s right to exclude must be considered by a district court indetermining whether an injunction is an appropriate remedy, but does not alone satisfy theirreparable harm requirement.Further, a showing that the patentee has suffered harm is insufficient. Rather, “to satisfythe irreparable harm factor in a patent infringement suit, a patentee must establish both of thefollowing requirements: 1) that absent an injunction, it will suffer irreparable harm, and 2) that asufficiently strong causal nexus relates the alleged harm to the alleged infringement.”
Apple, Inc.v. Samsung Electronics Co., Ltd.
, 695 F.3d 1370, 1374 (Fed. Cir. 2012) (“Apple II”).
This testrequires a showing that consumers buy the infringing product “because it is equipped with theapparatus claimed in the . . . patent,” and not merely because it includes a feature of the typecovered by the patent.
at 1376.This Court has already performed significant irreparable harm analysis in this case.Specifically, in considering Apple’s motion for a preliminary injunction, this Court found, and theFederal Circuit agreed, that Apple had not demonstrated irreparable harm from the likelyinfringement of the D’677 or D’087 patents.
ECF No. 452 at 27-38;
678 F.3d at 1324-26. The Court considered Apple’s arguments that it had suffered irreparable harm in the form of erosion of design distinctiveness and irreversible loss of market share and loss of customers. TheCourt concluded that Apple had not explained how erosion of design distinctiveness actuallycaused any irreparable harm, and rejected Apple’s theory that infringement diminished the value of
The Federal Circuit’s
opinion addresses a preliminary injunction. However, theirreparable harm requirement applies to both preliminary and permanent injunctions, and there isnothing in the
opinion suggesting that its discussion of irreparable harm should be limitedto the preliminary injunction context. Indeed, Courts regularly cite cases from the two contextsinterchangeably.
Apple v. Samsung Electronics Co.
, 678 F.3d 1314, 1323 (Fed. Cir.2012) (“Apple I”) (preliminary injunction opinion citing
Voda v. Codis Corp.
, 536 F.3d 1311 (Fed.Cir. 2008) (permanent injunction opinion)).
Case5:11-cv-01846-LHK Document2197 Filed12/17/12 Page3 of 23